Americup, S.A. de C.V.

Trademark Trial and Appeal Board

Mar 27, 2019

EX (T.T.A.B. Mar. 27, 2019)

This Opinion is not a
Precedent of the TTAB

Mailed: March 27, 2019

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re Americup, S.A. de C.V.
_____

Serial No. 86926734
_____

Samuel F. Pamias of Hoglund & Pamias PSC,
for Americup, S.A. de C.V.
Raul Cordova, Trademark Examining Attorney, Law Office 114,
Laurie Kaufman, Managing Attorney.
_____

Before Bergsman, Shaw, and Heasley,
Administrative Trademark Judges.

Opinion by Heasley, Administrative Trademark Judge:
Americup, S.A. de C.V. (“Applicant”) seeks registration on the Principal Register
of the mark AMERICUP (in standard characters) for “plastic cutlery, namely, knives,
forks, and spoons” in International Class 8 and “disposable dinnerware, namely,
dishes, bowls, and plastic glasses, disposable table plates, dishes” in International
Class 21.1

1 Application Serial No. 86926734 was filed on March 2, 2016, based on Section 44(d) of the
Trademark Act, later amended to Section 44(e), based on Mexican Registration No. 1651903.
15 U.S.C. § 1126(d), (e).

Serial No. 86926734
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The Trademark Examining Attorney has refused registration of Applicant’s mark
under Section 2(d) of the Trademark Act on the ground of likelihood of confusion with
the mark AMERICA’S CUP (in typed drawing format) registered on the Principal
Register for various services and goods, including those pertinent to the present
appeal, “beverageware, glassware, cups and mugs” in International Class 21.2 15
U.S.C. § 1052(d).
After the Trademark Examining Attorney made the refusal final, Applicant
appealed to this Board. We affirm the refusal to register.
I. Likelihood of Confusion

We base our determination of likelihood of confusion under Section 2(d) on an
analysis of all of the probative facts in evidence that are relevant to the factors
enunciated in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563,
567 (CCPA 1973) (“DuPont”), cited in B&B Hardware, Inc. v. Hargis Indus., Inc., 575
U.S. __, 135 S. Ct. 1293, 113 USPQ2d 2045, 2049 (2015); see also In re Majestic
Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003). In applying
the DuPont factors, we bear in mind the fundamental purposes underlying Section
2(d), which are to prevent confusion as to source, and to protect registrants from
damage caused by registration of confusingly similar marks. Park ‘N Fly, Inc. v.

Page references to the application record are to the downloadable .pdf version of the USPTO’s
Trademark Status & Document Retrieval (TSDR) system. References to the briefs, motions
and orders on appeal are to the Board’s TTABVUE docket system.

2 Registration No. 3197835, issued on the Principal Register on Jan. 16, 2007, Section 8
declaration accepted, renewed. Prior to November 2, 2003, “standard character” marks were
known as “typed” drawings. A typed mark is the legal equivalent of a standard character
mark. TRADEMARK MANUAL OF EXAMINING PROCEDURE (“TMEP”) § 807.03(i) (Oct. 2018).
Serial No. 86926734
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Dollar Park & Fly, Inc., 469 U.S. 189, 224 USPQ 327, 331 (1985); Qualitex Co. v.
Jacobson Prods. Co., 514 U.S. 159, 34 USPQ2d 1161, 1163 (1995); DuPont, 177 USPQ
at 566. We have considered each DuPont factor that is relevant, and have treated any
other factors as neutral. See M2 Software, Inc. v. M2 Commc’ns, Inc., 450 F.3d 1378,
78 USPQ2d 1944, 1947 (Fed. Cir. 2006); ProMark Brands Inc. v. GFA Brands, Inc.,
114 USPQ2d 1232, 1242 (TTAB 2015) (“While we have considered each factor for
which we have evidence, we focus our analysis on those factors we find to be
relevant.”).
Varying weights may be assigned to each DuPont factor depending on the evidence
presented. See Citigroup Inc. v. Capital City Bank Grp. Inc., 637 F.3d 1344, 98
USPQ2d 1253, 1261 (Fed. Cir. 2011); In re Shell Oil Co., 992 F.2d 1204, 26 USPQ2d
1687, 1688 (Fed. Cir. 1993) (“the various evidentiary factors may play more or less
weighty roles in any particular determination”). Two key considerations are the
similarities between the marks and the similarities between the goods. See In re
i.am.symbolic, LLC, 866 F.3d 1315, 123 USPQ2d 1744, 1747 (Fed. Cir. 2017) (quoting
Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 64 USPQ2d 1375 (Fed. Cir.
2002) (“The likelihood of confusion analysis considers all DuPont factors for which
there is record evidence but ‘may focus … on dispositive factors, such as similarity of
the marks and relatedness of the goods.’”)); Federated Foods, Inc. v. Fort Howard
Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976).
A. The Marks

Under the first DuPont factor, we determine the similarity or dissimilarity of
Serial No. 86926734
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Applicant’s and Registrant’s marks in their entireties, taking into account their
appearance, sound, connotation and commercial impression. DuPont, 177 USPQ at
567; Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110
USPQ2d 1157, 1160 (Fed. Cir. 2014); Palm Bay Imps., Inc. v. Veuve Clicquot
Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1692 (Fed. Cir.
2005). “Similarity in any one of these elements may be sufficient to find the marks
confusingly similar.” In re Davia, 110 USPQ2d 1810, 1812 (TTAB 2014).
Applicant argues as follows: “When the marks at issue are compared for
similarities in appearance, sound, connotation and commercial impression, we see
that ‘AMERICUP’ creates a completely different overall impression than the cited
mark ‘AMERICA’S CUP.’”3 Applicant’s mark, AMERICUP, consists of a fanciful
“coined word, which does not exist in the English language, with a total of eight (8)
letters and is pronounced \ə- ˈmer-ə-ˈkəp\.”4 On the other hand, the cited registered
mark, AMERICA’S CUP, consists of fourteen characters divided between two words,
both of which are found in the English dictionary. “AMERICA”―the first and more
prominent part of the cited registered mark―denotes the North or South American
continent;5 the possessive “’S” implies that the mark or products on which it appears
are associated with one of those geographic locations. And CUP denotes “an open
usually bowl-shaped drinking vessel.”6 As such, Applicant argues, the marks

3 Applicant’s brief, 4 TTABVUE 12.
4 Id.
5 MERRIAM-WEBSTER.COM 12/21/2016, Dec. 21, 2016 Response to Office Action TSDR 25.
6 Id. TSDR 36.
Serial No. 86926734
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engender different overall commercial impressions.
We agree with the Examining Attorney, however, that the marks are more similar
than dissimilar. Both marks begin with “AMERI” and end with “CUP.” According to
the COLLINS DICTIONARY, AMERI is a prefix for “American”;7 it thus conveys the same
or similar connotation as “American.” See Bank of Am. Nat’l Tr. & Sav. Ass’n v. Am.
Nat’l Bank of St. Joseph, 201 USPQ 842 (TTAB 1978) (applicant’s mark
“AMERIBANC” and design confusingly similar to opposer’s marks
“BANKAMERICA” and “BANK OF AMERICA”). Even though Applicant’s mark also
omits the “’S” in AMERICA’S, that has little, if any, effect on the marks’ overall
similarity. See In re Binion, 93 USPQ2d 1531, 1534 (TTAB 2009) (noting that “[t]he
absence of the possessive form in applicant’s mark . . . has little, if any, significance
for consumers in distinguishing it from the cited mark”); In re Curtice-Burns, Inc.,
231 USPQ 990, 992 (TTAB 1986) (finding the marks McKENZIE’S and McKENZIE
“virtually identical in commercial impression”). And since both marks begin with
“AMERI” and end with “CUP,” both marks connote that the “CUP” is American.
Hence, the slight differences in sight and sound would not overcome the marks’
substantially similar connotation and commercial impression.
Applicant’s arguments assume that consumers would examine both marks closely,
to parse their minute differences. But under actual marketing conditions, consumers
do not necessarily have the luxury of making side-by-side comparisons between

7 CollinsDictionary.com/us/dictionary/english/ameri 9/12/2017, Sept. 13, 2017 Office Action
TSDR 8, Examining Attorney’s brief, 6 TTABVUE 5.
Serial No. 86926734
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marks, and must instead rely upon their imperfect recollections. Dassler KG v. Roller
Derby Skate Corp., 206 USPQ 255, 259 (TTAB 1980). “The proper test is not a side-
by-side comparison of the marks, but instead whether the marks are sufficiently
similar in terms of their commercial impression such that persons who encounter the
marks would be likely to assume a connection between the parties.” In re
i.am.symbolic, 123 USPQ2d at 1748 (quoting Coach Servs. Inc. v. Triumph Learning
LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012)).
Applicant’s compression of the words into a single term, AMERICUP, is likely to
appear to consumers as a variation or shortened version of AMERICA’S CUP. The
Board has noted “the penchant of consumers to shorten marks.” In re Bay State
Brewing Co., 117 USPQ2d 1958, 1961 (TTAB 2016). And it has accordingly found
many shortened or telescoped designations confusingly similar to their longer
counterparts. See, e.g., Crocker Nat’l Bank v. Canadian Imperial Bank of Commerce,
228 USPQ 689, 690-91 (TTAB 1986), aff’d sub nom. Canadian Imperial Bank of
Commerce v. Wells Fargo Bank, Nat’l Ass’n, 811 F.2d 1490, 1495, 1 USPQ2d 1813,
1817 (Fed. Cir. 1987) (finding COMMCASH and COMMUNICASH confusingly
similar); In re Corning Glass Works, 229 USPQ 65, 66 (TTAB 1985) (finding
CONFIRM and CONFIRMCELLS confusingly similar); In re Pellerin Milnor Corp.,
221 USPQ 558, 560 (TTAB 1983) (finding MILTRON and MILLTRONICS confusingly
similar); Hunter Indus., Inc. v. The Toro Co., 110 USPQ2d 1651, 1661 (TTAB 2014)
(finding “applicant’s mark PRECISION would appear to prospective purchasers to be
a shortened form of opposer’s mark PRECISION DISTRIBUTION CONTROL.”).
Serial No. 86926734
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That holds true here. Because Applicant’s mark appears to be a shortened version of
the cited registered mark, “[C]areful purchasers who do notice the difference in the
marks will not necessarily conclude that there are different sources for the goods, but
will see the marks as variations of each other, pointing to a single source.” In re
Hitachi High-Technologies Corp., 109 USPQ2d 1769, 1774 (TTAB 2014).
On the whole, then, we conclude that the marks, taken in their entireties, are
more similar than dissimilar, and that the first DuPont factor consequently weighs
in favor of finding a likelihood of confusion.
B. The Goods and Channels of Trade

The second DuPont factor concerns the “similarity or dissimilarity and nature of
the goods or services as described in an application or registration…,” and the third
DuPont factor concerns the “similarity or dissimilarity of established, likely-to-
continue trade channels.” DuPont, 177 USPQ at 567; Stone Lion Capital Partners v.
Lion Capital, 110 USPQ2d at 1159, 1161.
We compare the goods as identified in the application and in the cited registration.
Id. at 1162 (quoting Octocom Sys., Inc. v. Houston Computers Servs., Inc., 918 F.2d
937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990) (“The authority is legion that the
question of registrability of an applicant’s mark must be decided on the basis of the
identification of goods set forth in the application regardless of what the record may
reveal as to the particular nature of an applicant’s goods, the particular channels of
trade or the class of purchasers to which the sales of goods are directed.”)); In re
FabFitFun, Inc., 127 USPQ2d 1670, 1672 (TTAB 2018). Again, Applicant’s identified
Serial No. 86926734
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goods are “plastic cutlery, namely, knives, forks, and spoons” in International Class
8 and “disposable dinnerware, namely, dishes, bowls, and plastic glasses, disposable
table plates, dishes” in International Class 21, whereas Registrant’s pertinent
identified goods are “beverageware, glassware, cups and mugs” in International Class
21.
Applicant argues that “none of the products in Appellant’s list of identified goods
appears in those of the cited registration. Consequently, because of the very nature
of these goods, they are completely different in terms of their type, contents, and
presentation.”8 “The fact that both products at issue may be generally stated to be in
one field, one market, or one product category, does not necessarily mean they are
sufficiently related for confusion to be likely.”9
We agree with the Examining Attorney, however, that the respective identified
goods are related. Registrant’s broadly worded “beverageware” encompasses
Applicant’s more narrowly worded “plastic glasses.” See In re Hughes Furniture
Indus., Inc., 114 USPQ2d 1134, 1137 (TTAB 2015) (“Applicant’s broadly worded
identification of ‘furniture’ necessarily encompasses Registrant’s narrowly identified
‘residential and commercial furniture.’”); In re Linkvest S.A., 24 USPQ2d 1716, 1716
(TTAB 1992) (“Registrant’s goods are broadly identified as computer programs
recorded on magnetic disks, without any limitation as to the kind of programs or the
field of use. Therefore, we must assume that registrant’s goods encompass all such

8 Applicant’s brief, 4 TTABVUE 18.
9 Applicant’s brief, 4 TTABVUE 17.
Serial No. 86926734
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computer programs including those which are for data integration and transfer.”).
Therefore, Applicant’s Class 21 goods are, in part, legally identical to goods identified
in the cited Registration.
As for the remaining goods, “likelihood of confusion can be found ‘if the respective
products are related in some manner and/or if the circumstances surrounding their
marketing are such that they could give rise to the mistaken belief that they emanate
from the same source.’” Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356,
101 USPQ2d 1713, 1722 (Fed. Cir. 2012) (quoting 7-Eleven Inc. v. Wechsler, 83
USPQ2d 1715, 1724 (TTAB 2007)). In this case, all of the respective goods consist of
tableware, defined as “objects used on the table at meals, for example, plates, glasses,
or flatware.”10 Whether they are made of plastic, glass or some other material, and
whether they are disposable or reusable, the evidence indicates that they are
commonly marketed to consumers by the same source under the same mark. The
Examining Attorney has adduced evidence of about 35 use-based third party
registrations to demonstrate this point. For example:

10 COLLINSDICTIONARY.COM, 3/26/2019. The Board may take judicial notice of dictionary
definitions, including online dictionaries that exist in printed format. In re Cordua Rests. LP,
110 USPQ2d 1227, 1229 n.4 (TTAB 2014), aff’d, 823 F.3d 594, 118 USPQ2d 1632 (Fed. Cir.
2016); Threshold.TV Inc. v. Metronome Enters. Inc., 96 USPQ2d 1031, 1038 n.14 (TTAB
2010). The Board also may notice dictionary definitions sua sponte. See University of Notre
Dame du Lac v. J.C. Gourmet Food Imps. Co., 213 USPQ 594, 596 (TTAB 1982), aff’d, 703
F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983).
Serial No. 86926734
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Registration No. Mark Pertinent Goods
4672049 TABLE CHAMELEON flatware, namely, knives,
forks, spoons;
serving forks, serving plates,
serving platters, serving
spoons, serving trays;
drinkware, namely, drinking
tumblers;
servingware made of acrylic
for serving food and drinks,
namely, beverageware,
drinking tumblers,
4486915

knives, flatware, plastic
cutlery, namely, knives, forks
and spoons;
glass table service, namely,
drinking glasses, plates, bowls,
drink ware, namely,
beverageware,
4975743 SMARTY HAD A PARTY Table Knives; mini cutlery,
namely, spoons and forks;
disposable dinnerware,
cocktail glasses, wine glasses,
champagne glasses, martini
glasses, shot glasses, glass
beverageware, champagne
flutes, coffee mugs, coffee
mugs, cups, forks, spoons,
dinner plates, salad plates,
buffet plates, cake plates,
pastry plates, desert plates,
dishes, plates, bowls, parfait
dishes, desert dishes, soup
bowls, salad bowls,
4557372

Flatware, namely, knives, forks
and spoons;
serving spoons and forks, glass
beverageware,
plastic, paper and foam plates,
bowls, mugs, cups, saucers and
tumblers

Serial No. 86926734
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Registration No. Mark Pertinent Goods
4782690

Flatware, namely, forks,
knives, and spoons;
Bowls; Cups; Drinking glasses;
Glass beverageware; Mugs;
Pitchers; Plates;
4792918

Tableware, namely, knives,
forks and spoons; Flatware.
Dinnerware, namely, plates,
cups and saucers all made of
ceramic, porcelain china, glass
and/or metal; Glass
beverageware; Glass bowls;
Glass dishes; Dishware.11
4832565 COMPO household and kitchen utensils,
namely, plastic cutlery,
namely, knives, forks and
spoons;
Biodegradable and
compostable plates, cups, and
bowls.
4863973 CHEEKY Disposable dinnerware,
namely, plastic cutlery,
namely, knives, forks and
spoons;
Bowls; Cups; Cups and mugs;
Disposable dinnerware,
namely, plates, bowls, cups;
Paper and plastic cups;
Drinking cups not of precious
metal; Paper and plastic cups;
Paper plates and paper cups;
Plastic plates; Plates.
4938416 VALUE KEY Spoons, forks, knives, plastic
cutlery, namely, knives, forks,
and spoons;
beverage glassware, plates,
bowls, cups, plastic cups,
plastic drinking glasses;12

11 June 21, 2016 Office Action TSDR 18-46.
12 Sept. 13, 2017 Office Action TSDR 16-95.
Serial No. 86926734
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Although such registrations are not evidence that the marks shown therein are in
use or that the public is familiar with them, they nonetheless have probative value
to the extent that they serve to suggest that the goods listed therein are of a kind
which may emanate from a single source under a single mark. See, e.g., In re I-Coat
Company, LLC, 126 USPQ2d 1730, 1738 (TTAB 2018); In re Aquamar, Inc., 115
USPQ2d 1122, 1126 n.5 (TTAB 2015); In re Davey Prods. Pty Ltd., 92 USPQ2d 1198,
1203 (TTAB 2009).
Applicant does not controvert the Examining Attorney’s evidence of third-party
websites or registrations. Instead, Applicant submits seven pairs of third-party
registrations, showing that the Office has allowed the same or similar words or
phrases to be registered to two different registrants for purportedly related goods.13
E.g.:
FOUR SEASONS Reg. No. 2259673 for
bakery goods
FOUR SEASONS, Reg. No. 3275980 for
tea
PARTY LINE Reg. No. 3530634 for wine PARTYLINE Reg. No. 2208676 for
newsletters
ST. CLEMENT Reg. No. 1434162 for
wines
CLEMENT Reg. No. 3130255 for rum
JOSEPH CELLARS Reg. No. 4002667
for wine
JOSEPH Reg. No. 2897939 for wine and
other alcoholic beverages
SAINT-JAMES Reg. No. 0311959 for
rum
ST. JAMES WINERY Reg. No.
3062256 for wine and sparkling wine14

13 Applicant’s brief, 4 TTABVUE 19-20.
14 Dec. 21, 2016 Response to Office Action TSDR 51-84.
Serial No. 86926734
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Applicant’s third-party registration evidence does not disprove the Examining
Attorney’s point that the sort of goods identified in the subject Application and
Registration are often sold by the same entity under the same mark. See In re G.B.I.
Tile and Stone Inc., 92 USPQ2d 1366, 1369-70 (TTAB 2009). In fact, Applicant’s
evidence refers to goods that are unrelated to Applicant’s and Registrant’s identified
goods. Cf. In re Thor Tech, Inc., 90 USPQ2d 1634, 1639 (TTAB 2009) (finding third-
party registrations of limited value because goods identified in the registrations were
in fields far removed from the involved products). For Applicant’s and Registrant’s
identified goods to be related, it is not necessary that they always emanate from the
same source under the same mark. The fact that they do so frequently is evidence
that “the respective products are related in some manner and/or ... the circumstances
surrounding their marketing are such that they could give rise to the mistaken belief
that they emanate from the same source.” Coach Servs. v. Triumph Learning, 101
USPQ2d at 1722.
Additionally, the Examining Attorney has introduced website evidence from
Webstrant Store,15 Smarty Had a Party,16 ECO Products,17 Bulk Party Zone.com,18
Posh Party Supplies,19 US Case House,20 Party and Paper Warehouse,21 Tablecloths

15 WebstarantStore.com, 9/13/2017, Sept. 13, 2017 Office Action TSDR 96-119.
16 SmartyHadAParty.com, 9/13/2017, Sept. 13, 2017 Office Action TSDR 120-121.
17 ECOProcutsStore.com, 9/13/2017, Sept. 13, 2017 Office Action TSDR 122-125.
18 BulkPartyZone.com, 9/13/2017, Sept. 13, 2017 Office Action TSDR 126-132.
19 PoshPartySupplies.com, 9/13/2017, Sept. 13, 2017 Office Action TSDR 133-137.
20 USCaseHouse.com, 9/13/2017, Sept. 13, 2017 Office Action TSDR 138-146.
21 PartyAndPaperWarehouse.com, 9/13/2017, Sept. 13, 2017 Office Action TSDR 147-155.
Serial No. 86926734
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Factory,22 Solo,23 and Karat,24 showing that the same entities sell Applicant’s and
Registrant’s sort of identified goods under the same mark. These representative
samples support a finding that the respective goods are related products that
consumers encounter emanating from the same source, under the same marks.
Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 62 USPQ2d 1001, 1004
(Fed. Cir. 2002) (evidence that “a single company sells the goods and services of both
parties, if presented, is relevant to the relatedness analysis”) quoted in In re
Integrated Embedded, 120 USPQ2d 1504, 1514-15 (TTAB 2016).
This evidence also demonstrates how the goods are normally sold or provided
through the same trade channels, where they are offered to the same class of
customers―members of the general public who seek tableware.25 See In re
i.am.symbolic, 123 USPQ2d at 1749 (“Likelihood of confusion ‘must be resolved on
the basis of the goods named in the registration and, in the absence of specific
limitations in the registration, on the basis of all normal and usual channels of trade
and methods of distribution.’”) (quoting Squirtco v. Tomy Corp., 697 F.2d 1038, 216
USPQ 937, 940 (Fed. Cir. 1983)). As the Board has found before, “Cut-glass and
plastic articles of tableware are customarily sold in the same retail outlets, and
purchasers of one kind of tableware might well be prospective purchasers of the other.
… [W]e are clearly of the opinion that cut-glass and plastic tableware are products to

22 TableClothsFactory.com, 9/13/2017, Sept. 13, 2017 Office Action TSDR 156-160.
23 SoloCup.com, 9/13/2017, Sept. 13, 2017 Office Action TSDR 161-162.
24 KaratCup.com, 9/13/2017, Sept. 13, 2017 Office Action TSDR 163-165.
25 Examining Attorney’s brief, 6 TTABVUE 11.
Serial No. 86926734
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which purchasers would be likely to ascribe a common origin were they to be sold
under the same mark….” In re Owens-Illinois Co., 143 USPQ 431, 432 (TTAB 1964).
Therefore, under the second and third DuPont factors, Applicant’s and
Registrant’s goods are considered related, and their channels of trade are the same
or overlap for likelihood of confusion purposes.
II. Conclusion

We have considered all of the arguments and evidence of record, including those
not specifically discussed herein, and all relevant DuPont factors. Because we have
found that the marks at issue are similar, that Applicant’s identified goods are related
to Registrant’s goods, that they would move through the same or overlapping trade
channels to the same or overlapping class of purchasers, we conclude that Applicant’s
mark AMERICUP, as used in connection with the goods identified in the application,
so resembles the cited mark AMERICA’S CUP for “beverageware, glassware, cups
and mugs” as to be likely to cause confusion or mistake, or to deceive under Section
2(d) of the Trademark Act.
Decision: The refusal to register Applicant’s mark AMERICUP is affirmed.